The USPTO published a memo (dated 1/27/10) by Director Kappos suggesting that applicants can overcome 101 rejections for computer readable media claims by amending the claims to to add the limitation “non-transitory" to the media. This is for cases where specification supports a viable “non-transitory” embodiment.
Below is an excerpt from the meme (emphasis added).
A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. $ I01 by adding the limitation "non-transitory" to the claim. Cf. Animals –Patentability, 110770) Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g.,Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998). (Emphasis added.)Here is a link to the memo. http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf
For reference below is a link to the 2008 USPTO revised written description training materials.
http://www.uspto.gov/web/menu/written.pdf
I found out about the memo from the All Things Pros blog who found it on the IP Spotlight blog.
